DECISIONS OF THE BOARD OF APPEALS AHRENS v. GRAY Decided December 31, 1929 402 O. G. 261 PATENTS-APPLICATION-PRIOR FOREIGN APPLICATIONS-SECTION 4887, REVISED STATUTES CONSTRUED. An applicant for patent in the United States can claim priority as of the date of his foreign application for patent on the same invention only if it was the first foreign application filed and was filed not more than 12 months prior to the filing of his United States application. APPEAL from the decision of the Examiner of Interferences. Affirmed. Mr. Frank W. Dahn for Ahrens. Messrs. Eakin & Avery for Gray. Before MOORE, Assistant Commissioner, RUCKMAN and LANDERS, Examiners in Chief RUCKMAN, Examiner in Chief: This is an appeal by the party Ahrens from the decision of the Examiner of Interferences awarding priority in favor of the senior party Gray. Gray filed his application April 22, 1927. Ahrens, who is a resident of Germany, filed his application in this country on July 7, 1927. In his preliminary statement the date of his introduction of the invention into this country is given as July 7, 1927. Said preliminary statement gives the dates on which Ahrens filed applications for the invention in various foreign countries. The only two such application dates that are prior to Gray's filing date of April 22, 1927, are the following: Germany, May 18, 1925, and April 16, 1927. These dates agree with the dates alleged in the oath to his United States application. In response to an order to show cause why judgment on the record should not be entered against him, Ahrens contended that even though he may not rely upon his first German application since it was filed more than a year prior to his filing date here, he should be entitled to the date of his second German application under section 4887, Revised Statutes. The Examiner of Interferences held that Ahrens is not so entitled, and the only question involved in the appeal is alleged error in that holding. Section 4887, Revised Statutes, contains the following provision: An application for patent for an invention or discovery or for a design filed in this country by any person who has previously regularly filed an application for a patent for the same invention, discovery, or design in a foreign country which, by treaty, convention, or law, affords similar privilege to citizens of the United States shall have the same force and effect as the same application would have if filed in this country on the date on which the application for patent for the same invention, discovery, or design was first filed in such foreign country, provided the application in this country is filed within twelve months in cases within the provisions of section forty-eight hundred and eighty-six of the Revised Statutes, and within four months in cases of designs, from the earliest date on which any such foreign application was filed. It is noted that the statute specifically states that the benefit under this section is limited to the date on which the application for patent for the same invention, discovery or design was first filed in such foreign country, provided the application in this country is filed within twelve months from the earliest date on which any such foreign application was filed. * The statute is clearly expressed. Obviously appellant is not entitled to the date of his earliest German application because it was filed more than 12 months prior to his United States application. Furthermore, he is not entitled to the date of his second German application because it is not the date on which the first foreign application was filed, nor the earliest date on which any such foreign application was filed. Neither party to the interference has cited any decision directly ruling on the question here presented, and we have been unable to find any such decision. The statute, however, is clearly worded and in our opinion is fairly susceptible of only the above interpretation. The decision of the Examiner of Interferences is affirmed. [Decision of the Board of Appeals] Decided April 13, 1929 413 O.G. 1101 1. PATENTABILITY-CHEMICAL PROCESSES. "In purely mechanical methods it is clear that the same series of steps generally produce the same results, or results that do not vary greatly from those expected, while in processes involving chemical action the result is not apparent beforehand except in limited classes of cases which follow some uniform and recognized rule of action." 2. SAME-SAME-METHOD OF CLEANING OR PICKLING METAL. "We would place the test of identity between these processes on the reagents used in the bath and not on the fact that metal is immersed in the bath in all cases in the same physical manner. In each case where it is found that a pickling bath containing the particular proposed reagent is not anticipated by the prior art directly or by any test of equivalency and the Examiner is of opinion that it can be allowed as a new pickling bath, we believe it is equally true that a new process is involved in applying it. Such process should include the positive step of immersing metal in the bath containing the essential identified ingredients." [This application has resulted in Patent No, 1,719,650, issued July 2, 1929.] Application for Patent filed February 19, 1927, Serial No. 169,673. Pickling of Metals. Messrs. Pennie, Davis, Marvin, and Edmonds for applicant. Before MOORE, Assistant Commissioner, and SKINNER and REDROW, Examiners in Chief. REDROW, Examiner in Chief: This is an appeal from the action of the Examiner finally rejecting claims 1, 2, 3, 4, 5, 6, 11, 12, 13, 14, and 15. Claim 1 is illustrative and is as follows: 1. The method of cleaning or pickling metals which comprises subjecting the same to a non-oxidizing mineral acid pickling or cleaning bath and inhibiting the chemical action of the acid on the metal without interfering with the removal of scale or oxide, and thereby reducing the formation of hydrogen and the production of acid mist and effecting an economy in the acid consumed, by incorporating in the acid bath a small amount of an inhibiting amine. The application discloses claimed improvements in the art of pickling metals. It has been found that if certain organic compounds be added to the bath of pickling acid two important results are accomplished, first, the acid is inhibited from dissolving the metal after the oxide has been dissolved from its surface, and, second, the generation of hydrogen is consequently prevented, which in turn eliminates the troublesome acid mist which is created by the minute bubbles of hydrogen when they escape from the surface of the bath. The state of the art shows that this inhibiting property is true of numerous compounds, but as yet it appears that no proven theory or principle of action has been set forth that will enable one skilled in the art to determine beforehand what compounds will act in this manner or to the greatest extent. Because of this, it is possible that from time to time compounds either new or old in themselves may be found to function better than those already used in this relation. The Examiner has rejected the claims here on appeal solely on the ground that a new process is not produced by the use of each different specific substance in the pickling bath over the pickling of metal by baths containing other known inhibitors and that the process is the same regardless of the ingredients of the bath, and that the claims should be in terms of composition of the bath only. [1] In purely mechanical methods it is clear that the same series of steps generally produce the same results or results that do not vary greatly from those expected, while in processes involving chemical action the result is not apparent beforehand except in limited classes of cases which follow some uniform and recognized rule of action. It is set forth in the record that the action involved here is one that is not entirely understood. It is considered, however, that it is of a chemical nature rather than physical and that the steps employed are classifiable as a chemical process instead of a mechanical method. In such case we find no difficulty in concluding that each chemical agent used constitutes a proper subject for a process claim on the ground that although the mechanical steps of immersing the metal in the various baths is the same, the chemical action is different 80349°-32 -3 in each case, due to the different chemical reagents, and this constitutes a different process. The mere steps of manipulation in all chemical processes are relatively few and simple, such as mixing, heating, filtering, and distilling, and are necessarily duplicated in performing numerous widely different processes chemically considered. This test of difference in process is, however, separate from that of patentable novelty over the state of the art. [2] We would place the test of identity between these processes on the reagents used in the bath and not on the fact that metal is immersed in the bath in all cases in the same physical manner. In each case where it is found that a pickling bath containing the particular proposed reagent is not anticipated by the prior art directly or by any test of equivalency and the Examiner is of the opinion that it can be allowed as a new pickling bath, we believe it is equally true that a new process is involved in applying it. Such process should include the positive step of immersing metal in the bath containing the essential identified ingredients. The present claims include the definite steps of incorporating the inhibitors in the acid bath and treating metal therein and hence include the definite positive steps constituting a proper process. The rejection of the claims on the ground of not being proper process claims or not correctly claiming the invention is reversed. DECISIONS OF THE UNITED STATES COURTS IN PATENT CASES FOR THE YEAR 1931 [Supreme Court of the District of Columbia] DESHELL LABORATORIES, INC., v. E. R. SQUIBBS & SONS ET AL. AND THOMAS E. ROBERTSON, COMMISSIONER OF PATENTS Equity No. 49,035. Decided March 31, 1931 407 O. G. 3 SECTION 4915, REVISED STATUTES-BILL DOES NOT LIE TO REVIEW DECISION DISSOLVING INTERFERENCE. Where a bill in equity under the provisions of section 4915, Revised Statutes, was filed to review a decision of the Board of Appeals in the Patent Office dissolving an interference, Held that the bill should be dismissed since the court is without jurisdiction, there having been no final refusal of a patent within the meaning of the section. Mr. Nelson J. Jewett, Mr. Edward S. Rogers, and Mr. Henry M. Huxley for the Plaintiff. Mr. T. A. Hostetler for the Commissioner of Patents. BAILEY, J.: I think that the action of the Board of Appeals of the Patent Office in dissolving the interference and holding that the plaintiff can not make a certain claim was interlocutory only in that the plaintiff had not yet been refused the patent by the Commissioner of Patents within the meaning of section 4915, Revised Statutes. The bill will therefore be dismissed without prejudice to filing a bill in equity in the event that he should finally be refused a patent by the Commissioner. |